Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 31 January 2005

Afterdawn.com and the BBC report that Norway's Supreme Court has upheld the trial court's earlier ruling and decided that linking from a website to MP3 files is illegal even when the actual MP3 files aren't hosted by or in any way associated to the website linking to them. This case concerns a Norwegian teenager, Frank Allan Bruvik, who set up a website called napster.no back in 2001 and allowed his users to submit direct links to MP3 files that would then become a huge browsable list of links to MP3 files across the Web.

By providing links to 170 MP3 files (compare this to millions available on P2P networks), Bruvik was held to have violated Norway's copyright legislation and was ordered to pay 100,000 kroner (€12,126; $15,807) to Tono, the music industry's lobby group in Norway. The ruling was identical to the lower court's original decision back in 2003, which was later overruled by Appeals Court who decided that Bruvik didn't violate any laws, but the users who put up the links, did. Tono's representative said that they were satisfied with the ruling, because it showed that music piracy would not be accepted.

Tono: says linking is a Nono

The IPKat is worried about the inconsistency between different European jurisdictions in their attitudes towards linking. This isn't something the European Union can cure by itself, since countries such as Norway aren't part of it. Perhaps a WIPO/WTO initiative will do the trick. He also thinks this debate has moved on a bit. Much of the market for illicit file sharing has surely been removed by a combination of the growth of authorised sites and the fear instilled by legal actions against individual downloaders.

Merpel is more interested in how they punish naughty Norwegians...

An artist's impression of future punishment for copyright infringement in Norway –
provided exclusively to the IPKat

Sunday, 30 January 2005

Sometimes it takes more than a skilled eye to tell the counterfeit product from the real thing

The IPKat has received the January/February 2005 issue of Product & Image Security & Data Authentication, published by EPI Publishing Ltd. This bimonthly carries news and features relating to technical means of tracking genuine products or deterring counterfeiters, as well as reports on legal cases and a round-up of relevant technological news. The articles are addressed to people in business rather than to lawyers, so they are pretty short and to-the-point.

The Court of First Instance (CFI) ruling in Case T-8/03 El Corte Inglés v OHIM, which dates from 13 December 2004, has now been made available in English. The IPKat thanks Melonie Atraghji (an IP PSL at Freshfields) for letting him know.

Somebody applied to register as a Community trade mark a figurative mark containing the words EMILIO PUCCI for goods in Classes 3, 18, 24 and 25. El Corte Inglés opposed, as the proprietor of the national figurative marks EMIDIO TUCCI for goods in Classes 3 and 25. The opposition was only partially successful, so El Corte Inglés appealed. The issue before the CFI was likelihood of confusion under Article 8(1)(b) of Council Regulation 40/94.

Emilio Pucci: stylish CTM application succeeds in part

Dismissing the appeal, following a lengthy review of the law and the facts, the CFI said (at para.73):

"OHIM and the intervener are therefore right to take the view, like the Board of Appeal, that the high level of distinctiveness allegedly acquired by the applicant’s earlier marks as a result of the recognition of those marks on the market and, accordingly, the reputation allegedly enjoyed by the marks were not sufficiently established by the material submitted by the applicant during the administrative procedure since it did not include adequately substantiated or verifiable objective evidence to make it possible to assess the market share held by the marks EMIDIO TUCCI in Spain, how intensive, geographically widespread and long-standing use of the marks has been or the amount invested by the undertaking in promoting them (see, by analogy, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 51)".

Emidio Tucci: known, but not well known enough to fend off sound-alike rival

The IPKat is unhappy about the CFI's terminology. The applicant for the CTM is referred to as "the intervener" and the opponent is referred to as the applicant. While this may be technically correct, it's jolly difficult for us cats to follow. Surely if someone starts life as "the applicant" because he's the one who applies for the trade mark, it makes little sense to call someone else "the applicant" further on in the same proceedings.

Saturday, 29 January 2005

The IPKat wishes to draw your attention to the 2005 Burrell Competition lecture, organised by the Competition Law Association. This year’s lecture, given by Judge Koen Lenaerts of the ECJ will take place on 7 February 2005 at the Institute of Electrical Engineers. Entitled “Reflections on the role of national courts in the enforcement of EC competition law”, it will be followed by dinner at the Inner Temple Hall. The IPKat says that last year’s lecture was highly informative and lots of fun and he’s sure that this year’s will be too.

The Inner Temple Hall – soon to be filled with lots of hungry competition lawyers

Friday, 28 January 2005

According to Heise Online the Higher Regional Court of Frankfurt on Wednesday overturned a lower court order that the name of an internet user who operated a music server via a German provider had to be made known to a music firm. The court said:

"An internet access provider is not principally obliged to reveal the name and address of an internet user who offers downloads of music files on the internet, thus violating the copyrights or other rights of third parties".

The Court maintained that a provider only supplies technical access to the internet but does not generally have any obligation to inspect the data being sent through its network. Rather, providers are only required to block access when they learn of illegal content. Providers do not, however, have to provide information about their customers since the providers have not themselves infringed any copyright or aided and abetted any infringement.

P2P - great for users, but the courts aren't sure how to handle it

Last year the Higher Regional Court of Munich handed down a similar ruling: providers do not have to reveal user data if there is reason to believe that an FTP server is being used to infringe copyright. The Appeals Court granted the request of an internet provider who wanted to appeal a ruling of the Regional Court of Munich I. However, the Regional Court of Hamburg ruled just before these events that copyright owners can demand information about the identity of a customer to whom certain dynamic IP addresses are assigned in various sessions in order to prosecute possible illegal downloads by an access provider.

The IPKat worries that inconsistencies between the procedural and evidential rules employed by courts in different countries, or (as is the case here) even within the same country, can make the law appear uncertain, arbitrary or unfair. He wonders whether the next round of IP harmonisation should focus more on issues like this rather than just in considering general norms for protection.

Yesterday the IPKat attended the first of a new seminar series hosted in the elegant atmosphere of Dean Rees House by Queen Mary Intellectual Property Research Institute. Judge Michael Fysh QC, SC of the Patents County Court spoke wittily yet informatively about IP and morality and suggested (only partly in jest) a codification of procedures to assessing morality in IP. A lively debate ensued.

Dean Rees House: elegant venue of QMIPRI's new seminar series

Further details of the forthcoming seminars in the series are available hereIf you wish to be added to the mailing list for Queen Mary IP events, send an email to the IPKat, who'll pass your details on to the organisers.

Thursday, 27 January 2005

Today Advocate General Kokott delivered her Opinion in Case C-353/03, the HAVE A BREAK reference to the ECJ from the UK Court of Appeal.

Nestlé uses the slogan HAVE A BREAK…HAVE A KIT KAT (for which it owns a trade mark) in UK advertising for its KIT KAT chocolate bars. It applied to register the element HAVE A BREAK on its own as a UK trade mark. The Court of Appeal found that the HAVE A BREAK element lacked inherent distinctive character but referred to the ECJ the question of whether the HAVE A BREAK element could have acquired distinctive character merely through use as part of the HAVE A BREAK…HAVE A KIT KAT slogan or in conjunction with another mark.

The Advocate General said yes, a sign that is used as part of, or in conjunction with another mark can acquire distinctive character:

§ The use mentioned in Art.3(3) (distinctiveness acquired through use) means both independent use and use as part of another or composite mark.

§ No other inference can be drawn from Art.10, which deals with revocation for non-use. Use of a sign as part of a principal mark falls within the definition of use which does not alter the distinctive character of the mark in the form in which it was registered (Art.10(2)(a)).

§ The concept of use for acquired distinctiveness is wider than the concept of use for infringement purposes because use for the purposes of acquired distinctiveness is not intended to define the scope of trade mark protection. Instead it is only meant to describe the manner in which a sign which is not inherently distinctive may acquire distinctiveness.

§ Protecting derivative elements of marks will not give over-wide protection marks by granting protection to derivative of derivatives and so-on ad infinitum since the fact that a primary derivative mark itself only acquires distinctiveness because of its use as part of the primary mark means that the primary derivative mark will be unlikely to be able to have its (rather limited) distinctiveness rub off on the secondary derivative mark which is part of it.

§ It is not the practice of Community institutions to refuse registration to parts of marks which have acquired distinctiveness through use.

§ Signs must be used in the form it which they are applied for to be registered. If distinctiveness is said to derive only from the subsidiary mark’s similarity to the principle mark, there can be no acquired distinctiveness. However, if the distinctiveness derives from use as part of or in combination with the principal mark, there can be acquired distinctiveness.

§ In practice it may be difficult to show that an element of a mark that has only been used as part of another mark has acquired distinctiveness. The fact that a sign causes consumers to have a reflex reaction such as to complete the HAVE A BREAK phrase with HAVE A KIT KAT it not enough on its own. Instead it must be shown that a product bearing the sign HAVE A BREAK will be attributed to Nestlé. If consumers just had cause to wonder whether products bearing the HAVE A BREAK sign were made by Nestlé this would merely give rise to likelihood of confusion.

The "Have a Break" is used quite imaginatively on Kit-Kat. Would consumers see this as trade mark use?

Google shows use of the same slogan on Retreat

The IPKat’s head is still reeling from this decision. There are a number of new concepts and there is a good deal of new terminology in this Opinion which the ECJ may or may not adopt. The IPKat remains unconvinced by the argument that use for registrability purposes and use for infringement purposes are different. Surely both are aimed at proving the same thing – that consumers perceive the sign in question as indicating the origin of goods or services on which it is used. In a piece of shameless self-promotion of her masters, Merpel points out that they have a book coming out imminently on the subject, Trade Mark Use, published by OUP.

This gem has appeared on the LexisNexis All England Direct subscription service: L’Oreal SA and others v Bellure NV and others, a Chancery Division decision of Mr Justice Hart dated 26 January.

L'Oreal, who made and sold perfumes and cosmetics, was the registered owner of a number of trade marks relating to two of its perfumes, ‘Trésor’ and ‘Miracle’. L'Oreal alleged that certain perfume products sold by Bellure, by the names ‘Coffret d’Or’, ‘La Valeur’ and ‘Pink Wonder’, infringed its trade marks under sections 10(2) and (3) of the Trade Marks Act 1994.

L'Oreal also complained that Bellure were guilty of passing off in respect of those and other products. Bellure applied to the court, seeking an order striking out the allegations relating to trade mark infringement and/or summary judgment. Bellure argued that none of the signs relied on by L'Oreal was similar to any of the registered marks at issue.

Hart J dismissed Bellure's a application. He concluded as follows:

* First, in determining issues as to similarity under sections 10(2) and (3) of the 1994 Act, it was unnecessary for a claimant to have proved that a likelihood of confusion existed in order to establish that there was a similarity between its registered marks and the signs used by the
defendant.

* Secondly, since L'Oreal's action for passing off was expected to proceed to trial, the issue of similarity might be resolved more readily by the trial judge, as he would have the benefit of the evidence adduced in relation to the alleged passing off.

It would be a miracle if the Bellures of this world surrendered without a good legal fight

The IPKat would like to read the transcript and see exactly what Bellure was arguing. He hasn't heard of an argument that similarity needs to be based on the need to establish a likelihood of confusion and wonders just what might have possibly been its legal origins. Merpel says: "is it really being argued that Bellure's ‘Coffret d’Or’, ‘La Valeur’ and ‘Pink Wonder’ marks are similar to L'Oreal's ‘Trésor’ and ‘Miracle’ marks, or has something been lost in the process of digesting the case?

STOP PRESS: since posting this blog, the IPKat has read the note on it that appeared on the Lawtel subscription service this morning. The note reads quite differently from All England's. According to Lawtel, the decision runs as follows:

"While the initial impression was that there was a lack of any relevant similarity in the packaging of the perfumes, it did not follow that the question of similarity should be considered in a vacuum and be determined now on the information before the court. Trade Marks Act 1994 s.10(2) required a determination of whether any similarity was sufficient to give rise to a likelihood of confusion so where the question was whether there was sufficient similarity between B's signs and L's marks, it was proper to take into account the reputation of L's marks, Sabel BV v Puma AG [1999] RPC 199 considered. Given that the action was going to trial on the question of passing off alleged in a pleading not at issue on the instant application, it was preferable that the trial judge should be left with the question of similarity and confusion.

(2) L's claim that it had suffered damage to its goodwill and was therefore entitled to a remedy did not depend on any element of deception. As the law stood, the allegation was hopeless. However as all questions of fact relevant to the non-existent tort would be before the trial judge in any event, it was appropriate for the issue to be left for the trial judge to determine".

The full judgment is still unobtainable off the internet, though it may be ordered commercially through Lawtel.

The Seattle Post reports that adidas has won a trade mark suit against Nike in Dusseldorf. The use by Nike and another manufacturer of two parallel stripes along the seam of trousers and jackets. This is the latest in a long line of litigation against big companies such as Ralph Lauren and Abercrombie and Fitch brought by adidas. "Really for us, this is business as usual - it may be Nike one day and another company another day," said an adidas spokesman.

The IPKat says that this just goes to show that big trade mark owners can be defendants in trade mark cases just as easily as they can be claimants. Merpel adds that it’s not clear whether adidas won on confusion-based infringement or dilution grounds – any help that the IPKat’s readers can give in clarifying this point would be appreciated.

More shocking examples of stripe-related trade mark infringement here and hereFind out what the IPKat did in celebration of this exciting new case here

Next Tuesday the Court of First Instance of the European Communities (CFI) gives judgment in Case T-57/03 SPAG v OHIM - Dann and Becker. This is the appeal arising from an opposition filed by the owners of the Spanish OLLY GAN trade mark against the OHIM Board of Appeal's decision to reverse the ruling of the Opposition Division and to state with confidence and with clarity that there was no likelihood of confusion between OLLY GAN and the applicant's HOOLIGAN trade mark, even if both are used for clothes.

OLLY GAN: not so much a hooligan as a nuisance?

The IPKat was astonished that the Opposition Division considered confusion likely, so he bets the CFI will uphold the Board of Appeal decision. Check this blog next week to find out if he's right.

Yesterday the Court of Appeal for England and Wales dismissed an appeal in R Griggs Group v Evans, Raben, Lewy and Lewy (the Doc Martens case) [2005] EWCA Civ 11. I

In short, Griggs was a group of companies one of which made ‘Doc Martens’ footwear. That footwear was sold under two trade marks, one of which belonged to Griggs, the other being licensed from an unrelated German company. In 1988 Griggs decided to combine the two marks to form a combined logo and commissioned an advertising agency to produce it for them. The drawing was done by Evans who, at that time, was working for the advertising agency as a freelance at a flat rate of £15 per hour. Evans was instructed to design "visuals for [the claimant’s] UK point of sale material"; the invoice referred to "… UK point of sale material designs including: client briefing, headline writing, logo ‘combination’ designs, highly finished visuals for client presentation".

A dispute arose between Griggs and Raben, an Australian footwear company with a number of retail outlets in Australia. The two Lewys were directors of Raben, which argued that Evans was the first owner of the copyright in the combined logo and that it had acquired that copyright by virtue of an assignment from Evans. Evans said he was employed merely to create some point of sale material for Griggs and that, had he known he was being instructed to produce a logo for all kinds of use all over the world, he would have charged more than his standard rate. He argued that Griggs was entitled to a licence to reproduce the logo for point of sale material in the United Kingdom and that, for all other purposes, the copyright belonged to Evans who could do with it whatever he wanted.

The deputy judge (Peter Prescott QC) ruled that the invoice was just an identification of the work Evans was asked to do and was not a document about copyright. Holding that Griggs was the equitable owner of all aspects of the copyright, he granted a declaration to that effect. The defendants appealed.

The Court of Appeal, led by IP specialist judge Lord Justice Jacob, emphatically dismissed the appeal. In the Court's opinion

* The implication of a term into a commissioning contract to the effect that copyright would invariably belong to the client in all cases where the client needed the right to exclude the contractor from using the work depends on all the factual circumstances.

* In this case, if an officious bystander had asked at the time of contract whether Evans was going to retain rights in the combined logo which could be used against Griggs, or against anyone to whom he sold the rights, anywhere in the world, other than in respect of point of sale material in the UK, the answer would surely have been "of course not". Evans had no conceivable further interest in the work being created.

* The deputy judge’s conclusion of fact was conclusive. He found that the reference to "UK point of sale" material was only for identification of the work to be done, it was not there to describe or limit the rights in the work. Further, the finding that Evans was paid the proper rate for the work disposed of any possible argument based on the notion that he needed to retain the copyright so that he could call for payment for such further use.

So much fuss about a teensy weensy logo ...

The IPKat is delighted with this ruling. He thought the appeal was a total waste of time and never stood a mouse's chance in cats' heaven of succeeding. The only issue which this appeal leaves unresolved is that of why the Court of Appeal was so polite in dismissing it.

Related proceedings on whether a British court can order the assignment of a foreign copyright interest herePuss in Boots here and here

The IPKat notes the following patent cases from outside his usual stomping ground:

* Mobile Burn notes that mobile phone manufacturers Nokia and Vitelcom have settled a patent dispute pending in the German and Spanish courts with a royalty bearing patent licence agreement covering certain Nokia patents relating to the GSM/GPRS Mobile Communication Standard and the grant of a cross licence to Nokia under Vitelcom patents in the same field. The IPKat notes that the press release by Nokia on the issue is very terse – if they came out on top, what’s the big secret?

* According to the Boston Business Journal, Genzyme is suing Transkaryotic in Israel, claiming that Transkaryotic has infringed its patent for glucocerebrosidase compound, which is used in the treatment of Gaucher disease. Both companies are based in Massachusettes so the IPKat would like to know, why Israel?

* The Financial Times reports that Sanofi-Aventis’ patent for the blood thinning drug Plavix is being challenged in the Scottish courts for lack of novelty by Aircoat. The IPKat welcomes the change for the Scottish courts to flex their IP muscles.

... for the CLT 7th Annual Information Technology Law Update conference. The programme includes a number of the IPKat's friends and the topics tackled include data protection, database protection, interception of communications, E-commerce, IT outsourcing and procurement, amendments to copyright law, digital rights management, business method patents, domain names and cybersquatting. What more could anyone ask?

Robert Carolina: one of the most popular speakers at the Annual Update

Hormel sold canned luncheon meat sold under the trade mark SPAM. Antilles owned a figurative trade mark for the word SPAMBUSTER. After it unsuccessfully applied to the Trade Mark Registry for a declaration that the SPAMBUSTERS mark was invalid, Hormel went to court and sought (i) declarations that the mark had been registered in contravention of section 3(1)(b) or (c) of the Trade Marks Act 1994 or (ii) revocation of SPAMBUSTERS under section 46(1)(c) on the ground that it was descriptive, generic or devoid of distinctive character. Antilles counterclaimed, contending that (i) SPAM was registered in contravention of s 3(1)(d) of the Act since it was a term used in trade under section 47(1) or that (ii) it should be revoked under section 46(1)(c). Antilles also complained that Hormel's proceedings were oppressive and vexatious and that Hormel sought to ignore the adverse ruling made against it in the Registry proceedings.

Richard Arnold QC ruled both that Hormel was barred from attacking the validity of the defendant’s mark and that Antilles' counterclaim would be dismissed. In particular:

* A person who attacks the validity of a patent or registered design is obliged to put his full case in support of that attack at trial. If he is unsuccessful, he is barred by "cause of action" estoppel from attacking the validity of that right in subsequent proceedings -- whether on the same or different grounds. In principle, there is no reason why the same law on cause of action estoppel should not apply to trade marks as well.

* Since Hormel was attacking the validity of SPAMBUSTERS again after having unsuccessfully attacked the validity of that mark in the Registry, it was barred from so doing by cause of action estoppel.

* Hormel's claims were an abuse of process which extended to the claim for revocation as well as to the claims for a declaration of invalidity, since they should have been included in the Registry proceedings. Having failed in the Registry proceedings, it was oppressive for Hormel to raise them now.

* Hormel's SPAM mark had not become a generic name for canned meat. Since SPAM already possessed a distinctive character when the application to register it was made, Antilles' counterclaim for a declaration of revocation and invalidity failed.

The IPKat is surprised that the estoppel issue hasn't already been litigated and that the judge had to "borrow" precedents from patent and design law, given the persistence of trade mark owners in pursuing litigation. Merpel adds, if you go to the Hormel website and key 'python' into the search box, you get the message "sorry, no recipe was found".

Monday, 24 January 2005

...that non-traditional trade marks account for only 1.05% of applications for Community trade marks made between 1996 and the end of 2004 and make up on 0.63% of marks registered in that time. (Source here)

The Register writes that Poland has intervened again to stop the Council of Agriculture and Fisheries from rubber-stamping the EU directive on computer implemented inventions. Late last week the controversial legislation, better known as the software patent directive, was reported to be an A-List item on the agenda of the Council of Agriculture and Fisheries. This would have seen it voted through to its second reading. Polish under-secretary from the ministry for science and IT, Wlodzimierz Marcinski, first made his opposition to the directive known last year. He said:

"Poland is determined to opt for unambiguous expression in the law of the European Union on issues connected with the patentability of computer-implemented inventions, which at the same time must ascertain that computer programs are excluded from patentability".

Thanks to the second Polish intervention, the vote has been delayed. Opponents of the proposal say that the JURI committee (responsible for legal affairs) now has a window of opportunity to restart the whole process. JURI is scheduled to meet in Brussels on 2 and 3 February, and Florian Muller of pressure group No Software Patents, says there is a good chance that the committee would vote to restart.

Will the whole proposal just go pop?

The IPKat can't understand why this proposal is still before the Council of Agriculture and Fisheries, rather than a body with more suitable experties.

China Daily reports that a group of DVD manufacturers, consisting of Sony Corp, Philips, Pioneer Corp and LG Electronics and known as the 4C Patent Group are being sued by two Chinese DVD manufacturers. The Chinese pair are claiming that the 4C Group violated US antitrust laws by fixing prices and unlawfully tied their patents together and conspiring to monopolise the DVD player market. The group denies the allegation, pointing to the fact that it has licensed its patents to over 100 Chinese patent manufacturers.

The IPKat notes that, even though it may be beneficial to competition, those who engage in patent pools may look like they are co-operating to an undue extent.

Sunday, 23 January 2005

Computer Patent Annuities (CPA) publishes a neat little quarterly magazine, the IP Review. The IPKat isn't sure why he receives it, but he's really rather pleased that he does. The ninth issue, now published, is bright and easy on the eye, beautifully produced and with content that may be read profitably without having to tax the reader's brains. From CPA's point of view it must be a fairly effective form of advertising, since its articles steer readers towards the CPA philosophy of managing IP rights.

IP Review's 28 pages include features on the following topics:

* A spiky photo and matching article by Keven Bader (UK Trade Marks Registry) on new dispute resolution procedures before his office).

* David Bainbridge's case note on the ludicrous decision of a Netherlands court last year to declare perfumes protectable subject-matter under the law of copyright.

* A reminder to readers of the advantages of shopping for counterfeits in Thailand (well, that's not what's intended, but it's amazing what you can read between the lines).

* "Eyeing up the options", on the benefits and detriments of locating IP rights in offshore companies.

CPA: advertising in style with the IP Review

The IPKat says, at £60/US$110 per annum, it is not a huge expense. It's fun and it's readable. Merpel adds: "If you can really persuade people to buy your promotional literature, you know you're on to a good thing".

Saturday, 22 January 2005

The Register reports that Palo Alto-based hardware manufacturer Hewlett-Packard Co. (HP) has agreed to pay $141 million (108.5 million euro) to settle its patent disputes with software maker Intergraph Corp. of Huntsville, Alabama. The companies issued separate statements to the effect that (i) they will immediately dismiss, withdraw or terminate all pending lawsuits; (ii) while reserving the right to reinstate them; (iii) HP gets licences to all Intergraph patents while (iv) Intergraph is licensed to use all HP patents in fields covered by its current products.

Intergraph sued in 2002 claiming that Hewlett-Packard, Dell Inc. and Gateway Inc. infringed patents related to its systems using Intel Corp. chips. Related settlements were reached last year with Intel, Dell and Gateway. Palo Alto-based Hewlett-Packard had been in litigation with Intergraph in both U.S. federal court and in the European Union. Intergraph said it would record about $11 million in legal expenses for the first quarter of 2005 to offset the settlement. Said Intergraph CEO and President Halsey Wise:

"We believe that the settlement with HP is in the best interest of our shareholders, and we are pleased to have received a license to HP's extensive patent portfolio for our fields of business".

Intergraph, which has more than 3,000 employees in 60 countries, specialises in graphics software to make maps, build and operate factories and ships, dispatch emergency service and manage infrastructure.

Invent: can be a less attractive commercial alternative to "infringe"

It seems to the IPKat that one of the best ways for a company to make money is to ensure that only the richest and moast successful companies infringe its patents.

Vnunet.com reports that the recent German court decision placing a levy on computers since they are seen as copying devices has been met with a cool reception by the computing industry. The European IT and consumer electronics trade association EICTA has said that it will fight the decision, claiming that it creates a barrier to the internal market within the EU. It also warns of a forthcoming decision in Stuttgart, where the court is considering whether printers should be counted as copying devices.

The IPKat welcomes an appeal against this decision that seems to be detrimental to consumers on spurious grounds.

Friday, 21 January 2005

This from The Register: a French court, ruling that Google's keyword advertising service infringes the trade mark of Le Meridien Hotels, ordered Google.fr to stop using the trade mark to trigger advertisements for Le Meridien's competitors. The judge ordered Google to pay all court fees plus a €2000 ($2,595) fine. The Tribunal de Grande Instance de Nanterre said that Google must stop linking competitor ads to searches for Le Meridien trade mark items and Le Meridien brands. If Google fails to remove offending ad links within 72 hours of being notified of a listing it faces a daily fine of €150 ($195). Google relies on adword sales for around 98 per cent of its income. Not all of this is dependent on competitor searches, however. Still, Google says it will appeal against this decision, saying:

"We will continue to defend against this suit, which we believe is without merit".

The French court's decision at odds with rulings on similar cases in the US. In the case of Geico, a car insurance company, a US court ruled that Google's adword sales were consistent with other comparative advertising practices in the states, and that the practice did not violate federal trade mark laws. However, in Europe, Louis Vuitton has also successfully sued the search company for trade mark infringement.

Le Meridien: litigating against Google may turn out to be an expensive pastime

"A similar judgment by the Tribunal de Grande Instance de Nanterre was issued on 17 January: Overture has been held legally liable because the judge considered Overture's ad booking tool also encouraged advertisers to chose keywords that were trade marks belonging to Accor. Overture was ordered to pay damages of 200 000 euros and to publish the judgment on its website".

The IPKat welcomes the decision. He doesn't like to see search engines cashing in on a company's reputation in order to damage it by selling "hits" to its competitors. Merpel says there's already enough hassle in telling Meridien from Meridian

Today's issue of the Official Journal of the European Union contains the full text of the Commission Decision of 29 October 2004 establishing the European Technical and Scientific Centre (ETSC) and providing for coordination of technical actions to protect euro coins against counterfeiting (2005/37/EC).

Euros: the Romans came pretty close to creating a single European currency -- but look what happened to them!

The IPKat is delighted to see this initiative, which is specifically designed to protect the integrity of his coin collection. Merpel is still wondering why people would ever bother making counterfeit coins when the profit margin on counterfeit notes is so much higher.

On Wednesday the European Court of Justice's Court of First Instance (CFI) dismissed the appeal of Proteome (Case T-387/03, Proteome Inc. v Office for Harmonisation in the Internal Market) to register the word BIOKNOWLEDGE as a Community trade mark for

– Class 9: ‘Databases, in physical and electronic form, providing information relating to organisms, and computer software for use in searching, retrieving, compiling, organising, managing, analysing, communicating and/or integrating data in and among repositories of information in electronic form, including computer databases’;

The application was dismissed on the grounds that the mark was both devoid of distinctive character for those goods and services and that it was comprised exclusively of terms that described them: see Regulation 40/94, Art.7(1)(b) and (c). The OHIM Board of Appeal dismissed Proteome's appeal and a further appeal was lodged with the CFI. The CFI dismissed the appeal, rightly holding (in the IPKat's opinion) that the word was descriptive and that BIOKNOWLEDGE could not be described as a syntactically unusual juxtaposition of the prefex "bio-" and the word "knowledge".

The IPKat can't pretend he's read them yet, but amendments to the Patent Cooperation Treaty (PCT), which take effect from 1 April 2005, have just been circulated by the World Intellectual Property Organization, the body that administers the PCT. A cursory glance suggests that these amendments are largely for user-friendly purposes such as facilitating electronic filings and other actions.

WIPO: the PCT is one of its best achievements

More information on the PCT plus full list of countries in which you can get patents through the PCT hereOther things to do on 1 April here and here

Wednesday, 19 January 2005

The IPKat has received another comment on the Praktiker case (see yesterday's two blogs on it), this time from his learned and esteemed friend Udo Pfleghar (Rechtsanwalt, Boehringer Ingelheim GmbH, formerly of OHIM). Udo writes:

Quickly (and probably quite differently from the official translation), the conclusions (and suggested responses) of the Advocate General may be translated as follows:

1. Services provided in the context of retail trade of goods, which are distinct from the actual sale and are identifiable, may be considered to be services within the meaning of Directive 89/104 for which a service mark may be registered.

2. The services of a retailer in the context of retail trade of goods, for which a service mark may be registered, are to be clearly specified in such a way in accordance with the Directive that it is discernable what these services actually consist of. Terms such as "retail" or "retail services" are not sufficiently detailed to describe the services performed in this manner. The registration of a mark for services provided in the context of retail trade of goods must also make it possible to determine to which goods or which types of goods these services relate.

3. Concerning similarity within the meaning of Articles 4(1)(b) and 5(1)(b) of the Directive, no line can be drawn between the services in the context of retail trade of goods and other services carried out in connection with the sale of goods or the goods sold by the retailer themselves.

As far as point 3 is concerned, AG Léger argues that the scope of protection of such retail service marks would be best limited by precisely and completely defining the services and the goods to which the services relate. He therefore disagrees with the German Federal Patent Court which fears that the protection of such marks could be too broad if no difference was made between retail services on the one hand and other services carried out in connection with the sale of goods (such as financing and maintenance services) or the goods themselves on the other hand.

As a sideline and of limited relevance, both the AG and the German Federal Patent Court employed the terminology "Wareneinzelhandel" ("retail trade of goods") instead of "Einzelhandel", which would simply mean "retail trade". While this would appear to be a tautology, the reason is probably that the Court was trying to avoid the lengthy wording of the application which is for "Einzelhandel mit Bau-, Heimwerker- und Gartenartikeln und anderen Verbrauchsgütern für den Do-it-yourself-Bereich", which translates as: "retail trade with construction, home improvement and gardening articles and other consumer goods for the do-it-yourself sector". This description of the goods, or rather of the types of goods, at least would seem to satisfy the criteria laid down by AG Léger in the response to question 2. However, the applicant would still have to specify what the services actually are.

The IPKat is tremendously grateful to Udo (as he is to Tibor Gold), who have done much to elucidate the issues facing the ECJ and to help spark general debate before the ECJ gives its final ruling later this year.

The November-December issue of The Trademark Reporter has reached these shores and the IPKat’s paws and is packed with goodies such as:
* a comparison of trade mark dilution law in the EU and US by renowned US expert J Thomas McCarthy (full text of article available here)
* a discussion of the relationship between trade mark protection for the configuration (trade dress) of goods and the need for competition on the market by Jerre B Swann and Michael J Tarr
* a piece on where there is a need for a separate right of publicity in the US by Barbara A Solmon
* a paper on the role of inference in establishing the state of mind of consumers when looking for the likelihood of confusion by William E Gallagher and Ronald C Goodstein PhD

Musical instruments: the next battleground for trade dress?

* a consideration of trade dress rights in musical instruments (with lots of lovely pictures!) by Robert M Kunstadt and Ilaria Maggioni
* a discussion of proof of irreparable harm in Canadian practice by Ruth M Corbin PhD
* a discussion of German comparative advertising by Andrea Lensing-Kramer and Peter Ruess
* discussion of Jerome Gilson’s proposal for various amendments to the Lanham Trade Mark Act by Keith M Stolte and a response by Jerome Gilson
* discussion of Dr John Liefield’s proposals regarding survey evidence of consumer confusion by A David Morrow and Ruth M Corbin and a response by John Liefeld

The IPKat says, it might take you until next Christmas to read all of these, but at least you’ll have fun in the process.

Tuesday, 18 January 2005

PC World reports on an upcoming Italian trade mark dispute between Intel and an Italian computer manufacturer. SBF Elettronica SRL manufactures PCs in a suburb of Naples. It uses a logo containing the words "G Genoa Power Inside" on its machines since, at one time it used motherboards produced by a company named Genoa (though it has ceased to do so since the company went bankrupt). Chip-maker Intel claims that the Italian company’s use infringes its INTEL INSIDE logo, which is registered as a trade mark in the EU. SBF’s lawyer claims that there is no infringement. He states:

“SBF says there is no such risk [of confusion], that G Genoa is a complex trade mark and that 'Inside' is a term in common English use that does not of itself evoke the Intel trade mark."

He claims that the colour and the design of the two logos are very different.

The IPKat always brings you the inside story.

The IPKat says, if anyone ever doubted the importance of recognising the need to keep certain marks free for other traders to use, they just need to consider the prospect of strong trade mark rights being granted in the word INSIDE. Merpel wonders whether, if this was prima facie infringement, a defence of descriptive use would be available. Can it be considered to be honest use to use a mark to describe contents which a computer no longer has.

Only a week to CLT's 9th Annual Intellectual Property Law Round-Up conference, which is coming up next Tuesday 25 January in the convivial surroundings of Le Meridien Piccadilly, London. The IPKat will be there and a good time is pretty well guaranteed, what with a highly-charged atmosphere (well, it is expensive), excellent speakers and some pretty good interrogation expected from the floor. It's still not too late to book!

Le Meridien: will be full of happy IP experts and enthusiasts next Tuesday

The previous blog (see below) bemoaned the non-appearance of English and French versions of the European Court of Justice Opinion in Praktiker Bau that looked as though it was very important to us IP enthusiasts.

Praktiker: the cause of all the fuss

Following from this, a thousand thanks to the IPKat's doughty friend Tibor Gold (Kilburn & Strode), who sent him an email today that reads as follows:

This Opinion of 13.01.05 was delivered in French yet extraordinarily is not available in French on the ECJ website. This summary is from the German with very cursory comparison with the Spanish.

This concerned a ref under Art. 234 EC to the ECJ by the Bundespatentgericht. The questions were:

1 Does retail trading constitute a service within the meaning of Article 2 of the Directive?

If the answer to this question should be affirmative:

2 To what extent must the content of such services by a retailer be specifically stated in order to guarantee the certainty of the subject-matter of trade mark protection that is required in order to
(a) fulfil the function of the trade mark pursuant to Article 2 of the Directive, namely distinguishing the goods or services of one undertaking from those of other undertakings, and
(b) define the scope of protection of such a trade mark in the event of a conflict?

3 To what extent is it necessary to define the scope of similarity (Article 4(1)(b) and Article 5(1)(b) of the Directive) between those services by a retailer and
(a) the other services provided in connection with the sale of goods, or
(b) the goods sold by that particular retailer?

In brief, the A-G affirmed/opined that:

re 1, marks may be registered for retail services;

re Q2, such registrations must be ‘concretised’ (made specific) sufficiently such that others can ascertain the concrete services for which the mark is registered as well as the goods or types of goods to which such services relate; and

re Q3, a registration for the concretised retail services, as in the answer to Q2 is not limited, as regards the scope of ‘similarity’ under Article 4(1)(b) and Article 5(1)(b) of the Directive, by the other services provided in connection with the sale of goods, or the goods sold by that particular retailer – in this connection, the A-G approves the following extract from Communication 3/01 of 12 March 2001 of the President of OHIM (the post-Giacomelli Communication):

“Conflicts

The limitation of applications and registrations for such services by indicating the field of activity of retail or other selling services will reduce the likelihood of conflicts because the risk of confusion between, for example, retail sales of meat on the one hand and of electrical goods on the other is non-existent.

As regards conflicts between services and goods, the Office takes the view that, while a "similarity" between goods sold at retail and retail services cannot be denied in the abstract, the risk of confusion is unlikely between retail services on the one hand and particular goods on the other except in very particular circumstances, such as when the respective trade marks are identical or almost so and well-established in the market. Each case that arises will of course be dealt with on its own merits.

Given that situation those requesting registration of marks for retail (or similar) services should not expect that they thereby obtain protection against the use or registration of marks for goods. If such protection is required as well, it is clear that registration for goods must be requested as well.”

Giacomelli: the case that started the saga

The IPKat (who points out that the Giacomelli case is available in English at [2000] ETMR 277) rejoices both that he now has some idea what's going on and also that the Advocate General's Opinion appears to make some sense.

Here's an Opinion of Advocate General Philippe Léger (Case C-418/02, Praktiker Bau- und Heimwerkermärkte, 13 January 2005). This Opinion is available only in Spanish, Portuguese, Finnish, Swedish, Italian and German.

Once again, can some kind person PLEASE put the IPKat and his myriad readers out of their misery by telling them what the nice man said (he thinks it's something to do with service marks). Merpel adds, "it's enough to make a cat cry ..."

Now here's a piece, lovingly translated into English, from the IPKat's friend and fellow blogger Jean-Baptiste Soufron:

Last December, the AFA (the French ISP Association) announced that it had been asked by the SCPP (the French version of the RIAA) to cut 20 P2P users off from the internet. Led by Vivendi Universal Music’s Chairman Pascal Negre, the SCPP based its claims on a recent French Internet Law, the Loi Pour la Confiance dans l’Economie Numérique (LCEN, the Digital Economy Confidence Act) Article 8 of which allowed Courts to suspend any obviously illegal content. They invoked special urgency procedures, seeking to avoid confronting the P2P users and avoiding the bad publicity such a thing could bring to French Music Producers.

The French Court refused to accede to the SCPP's request. Its decision of 8 October has just been made available by the Forum des Droits sur l’internet (Forum of Rights on Internet) here and here.

Instead granting the SCPP’s requests, the judge explained that nothing in the case justified the use of such procedures and that the claimants had to go through the full normal procedure. Copyright infringements are never obvious enough to allow Courts to avoid hearing defence rights ("la SCPP ne précise pas les raisons pour lesquelles elle serait fondée à ne pas appeler les parties en cause": the SCPP is unable to give any reason why it would be allowed not to be addressed by the parties to the case).

The judge adds an interesting argument, limiting the scope of the LCEN by stating that Article 8 does not allow the courts to cancel contracts between ISP and users so as to cut them from internet: all it does it to allow courts to suspend access to disputed content temporarily: ("la mesure sollicitée à savoir la résiliation d’une convention permettant l’accès à internet ne ressort pas de la compétence du juge des requêtes": the request to cancel a contract providing internet access is not in the power of this Court).

Jean-Baptiste-Soufron: "good news" ... till SCPP tries again

Pascal Negre’s SCPP thus suffered two set-backs in one go. First, they were denied the right to deal with an ISP without the burden of a real trial. Secondly they gave the courts an opportunity to give a new insight on the recent French Law by stating that it must not be interpreted as a tool to cut P2P users from the internet.

It’s quite possible that the French SCPP will soon give it a new try, but it’s good news until then.

The IPKat thanks Jean-Baptiste for his blog and hopes to receive lots of comments on this controversial decision.

Monday, 17 January 2005

If your trade mark has been on the Trade Marks Register in the UK for a century then you’re in for a treat. The Patent Office will be in contact with you to offer you the chance to have a certificate issued to mark this occasion. From the Patent Office’s point of view the exercise will “promote Intellectual Property as a valuable business commodity”. It is also being seen as an opportunity for advertise and publicise their companies.

The Patent Office “marks” a significant date

The IPKat doesn’t doubt that trade marks are valuable business assets but he’s not sure that reward for registering that takes 100 years to come to fruition will encourage many more businesspeople to apply for trade marks.

The former Yugoslav Republic of Macedonia has deposited its instrument of accession to the WIPO Performances and Phonograms Treaty (WPPT) 1996. This means that the WPPT comes into force in ex-Yugo Mac on 20 March 2005. However, nothing in the Balkans is ever as simple as it seems. The instrument of accession contains the following declarations:

"The Republic of Macedonia shall not apply the provision on the criterion of publication in respect of the national treatment on protection of phonogram producers in accordance with Article 3 paragraph 3 from the WIPO Performances and Phonograms Treaty, in relation to the expressed reservation of the Republic of Macedonia on Article 5 paragraph 3 from the International Convention for the Protection of Performers, Phonogram Producers and Broadcasting Organizations (Rome Convention)".

"The Republic of Macedonia shall not apply the provision on single equitable remuneration for the performers and for the phonogram producers for direct or indirect use of phonograms published for commercial purposes for broadcasting or for any other communication to the public, in accordance with Article 15 paragraph 3 from WIPO Performances and Phonograms Treaty, in relation to the expressed reservation of the Republic of Macedonia on Article 16 paragraph (1)(a)(i) from the International Convention for the Protection of Performers, Phonogram Producers and Broadcasting Organizations (the Rome Convention)".

The IPKat notes that, according to Wikipedia, the part of Macedonia contained within Greece is 51% of historical Macedonia, while the ex-Yugoslavian (and Bulgaian) bits contains the balance. To simplify things, why not just call the Greek one Big Mac and the ex-Yugoslav one Small Mac?

Sunday, 16 January 2005

Attention all you trade mark owners out there! Thanks to the BBC, the IPKat has found out about a unique advertising opportunity. Andrew Fischer of Omaha, Nebraska, is selling space on his forehead through auction website eBay. The highest bidder will be entitled to have his trade mark tattooed on Fischer’s forehead in temporary ink that will last for 30 days. However, he refused to bear any illegal or immoral signs. The money will be put towards Fischer’s college fees. Bidding eventually ended at $30,000.

The IPKat thinks that this is a great idea, though it’ll stop working if everyone else starts doing it. Merpel adds that perhaps tuition fees are too high if students have to sell their bodies to pay them.

"One million international patent applications translates into one million pieces of technology that have entered the public domain for the benefit of society at large. This reflects the contribution that the intellectual property system makes to spurring technological development and expanding the pool of public knowledge. While it took 22 years to receive the first half million PCT patent applications, it took only 4 years to top the one million mark, reflecting an astonishing acceleration in the pace of technological development and unprecedented use of the international patent system. This is a strong indication of the strategic importance of patents to business and broad-based recognition that the PCT offers a smart business solution for companies seeking international patent protection".

The PCT facilitates the process of obtaining patent protection in more than 120 countries through the filing of a single international application. The organisation declined to give details about the one millionth application. The top users of the system come from the United States, with 35.7 per cent of requests in 2003, followed by Japan (15.2 per cent) and Germany (12.7 per cent). But the steepest increase since 2000 has been in Asian countries, notably China and South Korea, according to WIPO data. Major electronics corporations are the biggest users, led by the Dutch firm Philips with almost 10,000 applications between 1995 and 2003, Germany's Bosch group and Matsushita of Japan.

The past ...

... and the future?

The IPKat wonders what a million patent applications means in terms of translators' and patent agents' fees, litigation costs and the other little expenses that help to keep the patent sector economically attractive for those who feed off it. Merpel more cynically wonders what proportion of those patents were never actually used.

A communiqué from WIPO informs the IPKat of the new members of the various treaties administered by WIPO. As a result, the numbers of states to have acceded to the various treaties as of 31 December 2004 are (in numerical order):

Friday, 14 January 2005

This comes from New Scientist via Ananova that US military chiefs have considered developing an 'aphrodisiac' chemical weapon that would make enemy troops sexually irresistible to each other. The Sunshine Project, which exposes research into chemical and biological weapons, revealed the plans. Provoking widespread homosexual behaviour among troops would cause a "distasteful but completely non-lethal" blow to morale, the proposal says. Other ideas included

* chemical weapons that attract swarms of enraged wasps or angry rats to troop positions, making them uninhabitable;

US defence relies on breathtaking innovation

* a chemical that caused 'severe and lasting halitosis', to identify guerrillas trying to blend in with civilians;

* a process for making troops' skin unbearably sensitive to sunlight.

The proposals, from the US Air Force Wright Laboratory in Dayton, Ohio, apparently date from 1994. The lab sought Pentagon funding for research into what it called "harassing, annoying and 'bad guy'-identifying chemicals". Sunshine Project spokesman Edward Hammond said it was not known if the proposed six-year research plan was pursued.

The IPKat has long wondered what sorts of inventions are barred from patentability under the Patents Act 1977, section 1(3) (= European Patent Convention, Article 53) as being "an invention the commercial exploitation of which would be contrary to public policy or morality". Now he thinks he knows. Mischievous Merpel says: "Just think what fun you can have if you spray one bunch of people with the aphrodisiac spray and the other bunch with halitosis chemical ..."

It’s not often that a Trade Mark Registry decision makes the newspapers, but yesterday the London Metro reported on a major catfight, decided on 21 December 2004. The cartoon character “Tony the Tiger” has been telling consumers that Kellogg’s FROSTIES are “Grrrreat!” for many years and has lived on the UK Trade Mark Register for a while. Kellogg though didn’t think it was “Grrreat!” when Exxon applied to register the figurative TIGERMARKET mark, which featured a cartoon tiger for shops and cafes located at its petrol stations. “Down Kellogg’s Kitty” said the hearing officer – there was judged to be no likelihood of confusion, since consumers would distinguish between the two lines of goods. Though cafes and restaurants sell breakfast cereals, there was thought to be no connection between the parties’ goods/services. The article ends with a useful piece of information that you’re unlikely to find in any IP test book: the award of costs in Exxon’s favour (£1,100) would purchase 561 delicious 750g packets of FROSTIES.

The Patent Office: they’re “Grrrrreat!”

The IPKat, always happy to see a cat case in court, notes that the question of similarity between restaurants and cafes and foodstuffs that may be served there has come up before OHIM and has been decided differently.
Kitty confusion here, here and here

Thursday, 13 January 2005

The IPKat's friend Jordgubbar has sent him some thoughts on a recent announcement by IBM, the nature of which is self-explanatory:

"BBC News reported on Monday that IBM intends to license 500 of its US software patents on a royalty-free basis so that they can be used by the open source development community. IBM has described the step as a "new era" in the management of its patent portfolio and has indicated that further patents would be made more freely available in future. The patents include software for a range of functions, including text recognition and database management (a full list is available here).

Announcing the pledge, Dr John E. Kelly of IBM said that "True innovation leadership is about more than just the numbers of patents granted". The pledge applies to any individual, community, or company working on or using software that meets the Open Source Initiative definition of open source software. According to US Patent and Trademark Office, IBM was granted more US patents than any other company for the twelfth consecutive year. IBM remains the only company to receive more than 2,000 patents in one year. Indeed, the New York Times reports that IBM was granted 3,248 US patents in 2004. With reportedly more than 40,000 patents in its portfolio, IBM has not stated any intention to step down its filing activities, and since it intends to maintain the 500 "released" patents, the move is unlikely to make a dent (however small) in its portfolio maintenance costs. The position would obviously be different if IBM announced an intention to publish previously unpublished software inventions.

IBM's new logo?

Cautiously welcoming the move, it seems that the open source community is not altogether appeased by IBM's gesture (e.g. see here). Since IBM has not given up the notion of proprietary rights in software (a premise of open source) and the move is unlikely to make any significant cost impact, what is therefore meant by the "new era" in portfolio management remains unclear."

The IPKat wonders how many of his readers agree. Please post a comment and let him know.

The IPKat likes to imagine himself a a sophistiKat who elegantly trots the globe. It is therefore with some embarrassment that he confesses that he cannot put a finger to the bit of the map which the Union of the Comoros occupies.

The Comoros: another country falls into line. But is its gross national product
as big as WIPO's?

The Comoros, note, have agreed to become members of the World Intellectual Property Organization (WIPO) with effect from 3 April 2005. On the same date they accede to the Paris Convention on the Protection of Industrial Property and the Patent Cooperation Treaty

The move by a small minority of MEPs to restart the legislative process on the Computer Implemented Directive (commonly misnamed the “Software patents” directive), will create further confusion, cost and uncertainty for Europe’s most innovative small and medium sized companies.

Supporters of the Directive believe the proposed Motion in the European Parliament which is primarily based on ‘discontinuity’, lacks sufficient grounds to validate restarting a legislative process which has been going on for five years now.

Simon Gentry of the Campaign for Creativity said the move by opposition to delay the Directive further, begins to make a mockery of the legislative process.

“Given that the facts surrounding the Directive have remained the same throughout the process there is no case for repeating the whole process. From the outset, the Directive sought to clarify the existing laws on patentability. It is obvious that the current patenting regime creates a positive legal framework which is supportive of innovative IT companies. The IT sector is thriving. Even Open Source is thriving in the current regime. Those who want to abolish patentability for CI inventions need to prove that the current system is not working. After five years they have failed to do that. Restarting the debate will not alter that fact. Europe’s creative and innovative industries need a stable and effective legal environment in which to thrive. This attempt to drag the debate on for another three years will do the opposite".

The IPKat agrees that the present state of affairs -- judged by the benefits it has achieved -- works pretty well in practice, whatever anyone says about the theory. Also, when it comes to any form of legal reform, the burden of proving that it is needed falls on whoever wants to change the status quo. However, no-one ever died of a debate. If there had been more and better-informed discussion of the CI issue in the first place, it might not be finding itself used as a lobbyists' football now.

Do current IP laws harness our capacity for creativity or do they put it in shackles?

Another campaign for creativity here More on creativity here and hereThe Six Myths of Creativity here

The Miami Herald reports that Adidas is suing Abercrombie & Fitch in the US District Court in Portland. The German sportswear manufacturer is claiming that several pairs of pants and a zip-up sweat shirt, all adorned with three parallel stripes running down the sleeve and pant leg, which appeared in Abercromie’s Christmas catalogue, infringe its three-stripes trade mark. This is not the first time that the two companies have met in the US courts concerning infringement of that mark, though in the past the cases have been settled.

Adidas: never afraid to stripe while the iron’s hot

The IPKat once again pays tribute to Adidas’ contribution to the development of trade mark law the world over.

Wednesday, 12 January 2005

Here's another Court of First Instance (CFI) Community trade mark case, posted today: Case T-334/03 Deutsche Post EURO EXPRESS GmbH v OHIM. Euro Express applied to register the word EUROPREMIUM for a wide range of goods and services in Classes 16, 20, 35 and 39 of the Nice Agreement. The examiner refused the application on the ground that the mark was descriptive of the goods and services in question as well as being devoid of any distinctive character within the meaning of Art.7(1)(b) and (c) of Council Regulation 40/94. The Board of Appeal dismissed the appeal on the ground that Art.7(1)(c) precluded registration of EUROPREMIUM: this was because the mark was likely to be perceived by consumers as an indication of the notable quality and European origin of the goods and services covered by it. Euro Express then appealed to the CFI.

Europremium: lucky to win its appeal - but that doesn't mean its mark is registrable

The CFI allowed the appeal, holding that the Board of Appeal had incorrectly refused Euro Express's appeal.The CFI's reasoning was as follows:

* Article 7(1)(c) pursued an aim in the public interest, that the signs and indications referred to by it might be freely used by all. Accordingly, a sign’s descriptiveness could only be assessed by reference to the goods or services concerned and to the way in which it was understood by a specific intended public.

* In this case, the goods and services for which registration was sought were, in particular, goods in various materials intended for packaging, storage or transportation, advertising, management or business assistance services and transport and storage services. Since the word EUROPREMIUM was not composed of elements descriptive of the goods and services in question, it only remained to consider whether, despite that lack of descriptiveness of the elements of which the sign in question was composed, that sign, taken as a whole, enabled the target public to establish a direct and concrete link to the goods and services for which registration was sought.

* The Board of Appeal's decision had merely indicated that the word evoked in the consumer’s mind the impression of high quality European goods and services, without showing that that characteristic would enable the consumer immediately and without further thought to establish a direct and concrete link to the relevant goods and services. Accordingly, in failing to relate its analysis to the goods and services in question and in failing to show that the word EUROPREMIUM understood as a reference to high quality goods and services coming from Europe, might serve to designate those goods and services directly, the Board of Appeal had misapplied Art.7(1)(c) of the Regulation.

The IPKat wonders whether this is a bit of a quibble. It seems implicit from the Board's reasoning that the missing link in its judgment was assumed to be there. Still, for the sake of justice being seen to be done, it is important to make sure that all the steps in the appraisal of an applicant's mark are taken before the decision is given. Merpel says: "who cares? It's a crummy mark and shouldn't be registered except on proof of acquired distinctiveness".

Back from its holidays the Court of First Instance of the European Communities has lost no time in dismissing weak appeals against the refusal of OHIM to grant Community trade marks in undeserving cases. Today's victim, in Joined Cases T-367 to 369/02, was Wieland-Werke AG of Ulm, Germany. WW had applied to register the words SnTEM, SnPUR and SnMIX for "metallic semi-finished products in the form of sheets, strips, wires, tubes, sections, rods or the like, especially in non-ferrous metals, such as copper or a copper alloy, having a metallic coating on one side or both sides especially of tin or a tin alloy", all within Class 6 of the Nice Classification. The examiner was unimpressed. In his opinion, the CFI stated:

"the element ‘Sn’ represents the chemical symbol for tin. The element ‘TEM’ is the abbreviation used in the scientific and technical sphere for the word ‘tempered’ in connection with alloys. Consequently, the trade mark SnTEM means ‘tempered tin’. The element ‘PUR’ means pure, so the trade mark SnPUR means ‘pure tin’. Last, according to the examiner, the element ‘MIX’ corresponds to the German for ‘mixture’ and the trade mark SnMIX therefore means ‘tin alloy’".

The examiner also found that each of the trade marks sought was of such a nature as to deceive the public inasmuch as the products in respect of which the applications were made were not consistent with those indications. The Board of Appeal upheld the examiner's decision, so WW appealed to the CFI, which had no difficulty dismissing the appeal. In the CFI's opinion (at paras 40 to 42):

"Finally, so far as concerns the applicant’s argument that the terms SnTEM, SnPUR and SnMIX are not used to designate the intermediary products themselves, or one of their essential characteristics or yet the quality following from the treatment they have undergone, it is enough to observe that it is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) of Regulation 40/94 should actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient that those signs and indications could be used for such purposes .... Nor can the latter rely on Case T-193/99 Wrigley v OHIM (DOUBLEMINT), set aside by the judgment in OHIM v Wrigley, since it is enough that the sign in question should designate, in at least one of its possible meanings, a characteristic of the goods or services concerned (see OHIM v Wrigley, paragraph 32 and, by analogy, Campina Melkunie, paragraph 38).

The applicant’s argument that there are other terms for designating the same characteristics of its products is not persuasive. It is immaterial whether or not there are synonyms capable of designating the same characteristics of the goods or services mentioned in the application for registration. Although Article 7(1)(c) of Regulation 40/94 provides that, if the ground for refusal set out there is to apply, the mark must consist 'exclusively’ of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that those signs or indications should be the only way of designating such characteristics (see, by analogy, Campina Melkunie, paragraph 42, and Koninklijke KPN Nederland, paragraphs 57 and 101).

It follows from all the foregoing considerations that the word signs SnTEM, SnPUR and SnMIX may serve, within the meaning of Article 7(1)(c) of Regulation 40/94, from the point of view of the targeted public, to designate essential characteristics of the goods falling within the categories covered by the applications for registration".

Wieland-Werke: must look for less descriptive names for its products

The IPKat observes that CFI case law on registrablity is becoming more stable and predictable in the light of the major ECJ rulings over the last year or so on distinctiveness character for word marks.

In LTE Scientific Ltd v Thomas [2005] EWHC 7 (QB), decided yesterday by Mr Justice Richards and already noted by the All England Direct subscription-only service, Thomas sold his business to LTE on terms which included restrictive covenants. LTE later alleged that Thomas was working for its competitors in breach of those restrictive covenants. LTE obtained disclosure orders against Thomas and his wife which required them to deliver up computers and electronic storage devices so that their contents could be inspected.

In these proceedings LTE alleged that, once Thomas knew about the disclosure order, he (i) deliberately evaded service of the order upon him and (ii) installed a 'scratch' program on his home computer and deleted various relevant files from the hard disk. LTE also complained that Mrs Thomas (i) failed to deliver the computers immediately to the supervising solicitor as required to do by the orders and (ii) failed to provide her husband's mobile phone number. LTE therefore applied to commit the Thomases for contempt of court.

LTE: entitled to enforce the cooperation of alleged wrongdoers

The judge ruled that both Mr and Mrs Thomas were in contempt of court. Thomas' contempt was the more serious since he sought to evade service of the order on him. Further, the loading of the scratch program and its use to delete the relevant files was a deliberate action which he clearly knew to be wrong. That contempt was so serious that committal to prison was an appropriate remedy. As to Mrs Thomas, she was in contempt in failing to deliver up the home computer or to provide her husband's mobile number. Indemnity costs would be awarded against her but she would not be sent to prison.

The IPKat sees this as a salutary reminder of the power of contempt proceedings to concentrate the minds of even the most recalcitrant and uncooperative of litigants.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!